Is it possible to trademark a sound? Possibly. But there are a few unique rules/conditions to do so. Think you may have a distinctive sound that would benefit from trademark protection? Read on to see if it might be eligible…
If you grew up in the ‘good ol’ days’ before streaming became the norm, you will probably appreciate this thought exercise. Imagine you’ve just finished dinner and are in the kitchen washing dishes, the television is on in the living room with the sound playing in the background. You’re washing the last dinner plate when you hear the distinctive “Dun dun” echo from the other room. You instantly recognize it as the classic tone that signals Law & Order so you run to the living room to watch your favourite show, leaving the last dinner plate unwashed, because you can’t miss the new episode.
There are quite a few sounds that, if played with your eyes closed, I bet you could identify what they represent.
Congratulations…you’ve just discovered the power of an auditory trademark (or sound mark).
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Law and Order |
Homer Simpson |
Star Wars lightsaber |
Did you know that you can register a sound as a trademark? Think about the sound of Homer Simpson saying “D’oh” or the lightsaber sound from Star Wars. These sounds are examples of registered trademarks in the US enabling them to act against anyone who is using the same or similar sound for the same or similar goods and services.
The sound trademark is a non-traditional trademark (i.e. not a name or logo) and needs to fulfill certain requirements in order to become registered. It needs to fulfill the same requirements as for the other more traditional trademarks (i.e. names, logos, etc.), meaning the trademark must be distinctive and cannot be confusingly similar to a prior trademark.
As a sound is a non-traditional trademark there is an additional requirement that the trademark must have “acquired distinctiveness”. We describe a few requirements below in relation to sound marks.
The sound should function as a trademark by allowing to distinguish the trademark owner’s goods and services from those of others. The sound’s features, in relation to the goods and services for which it is used, cannot be dictated primarily by a utilitarian function, as this would grant a trader a monopoly on the functional features. For example, as the primary purpose of a ring tone, alarm clock, door bell, or security alarm is to provide sound, sound marks are generally unregistrable in association with these goods.
As an example, we can also refer to the case of Harley Davidson, who wanted to register the sound that was produced by their motorcycle’s engines. On February 1st, 1994, Harley filed a registration for a trademark in the US, with the description “The mark consists of the exhaust sound of applicant’s motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use”.
Competitors Yamaha, Honda, and the like opposed the trademark registration stating that there’s no difference between the sound a Harley’s engines make and the sound their engines make. The court stated that the sound of the engine could not serve as a trademark, as the functional element is essential to the use or purpose and the exclusive use of this feature is seriously unfavourable to other manufacturers.
The case was so big that even commercial appliance manufacturers mocked Harley. Saying if Harley wins, then they would be trademarking the noise that their blenders and vacuum cleaners make.
Non-traditional trademarks (i.e. sounds, 3-D shapes, holograms, moving images, scents, taste, mode of packaging, texture, positioning of a sign), can only be registered if they have a certain significance or a capacity to be recognized, so it could indicate to consumers the commercial origin of the goods/services in question.
To go back to our earlier example, when we hear “D’oh”, most people would immediately think of the famous Homer Simpson. If you produce a unique sound in a commercial for your business, there needs to be substantial recognition of the sound by dealers or the end consumer, in order to register the sound as a trademark.
The Canadian Intellectual Property Office will request evidence of acquired distinctiveness in Canada for sound marks. The evidence must establish acquired distinctiveness as of the Canadian filing date. Such evidence would typically describe significant sales, marketing, and advertising of the mark in association with the claimed goods and services.
If you need help navigating the trademark requirements for your sound trademarks or if you wish to register one, Stratford Intellectual Property can help.